Copyright & Trademark Matters

Insights and Developments in Copyright and Trademark Law

Houston, We Have a Problem: City Petitions the US Supreme Court to Register Its Official Seal as a Trademark

Posted in Color, Emoticon, Legislation, Product Configuration, Section 2(b), Trademark, Trademark Prosecution, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller

The City of Houston, Texas has filed a Petition For Writ Of Certiorari with the Supreme Court of the United States asking the Court to interpret Section 2(b) of the Lanham Act to determine whether it prohibits a government entity from federally registering its own flag or coat of arms or other insignia as a mark with the US Patent and Trademark Office.  The City of Houston v. Acting Director, U. S. Patent and Trademark Office, 13-784 (S.Ct. December 30, 2013). As was noted in our previous post on emoticons, US trademark law prohibits the registration of marks which fall into many different categories, including any mark which “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.”  The original Examining Attorney for Houston’s application for registration, and the US Trademark Trial and Appeal Board and the US Court of Appeals for the Federal Circuit in subsequent appeals, all agreed that the “plain meaning” of the statutory language prohibited such registration. Does this make sense?

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Can an Emoticon be Protected as a Trademark?

Posted in 15 U.S.C. 1051(b), Emoticon, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller

Gap Inc. and Diane Von Furstenberg’s company DVF Studio have asked the federal court in the Southern District of New York to rule on whether the heart emoticon <3 can be protected as a trademark. Their declaratory judgment complaint filed against VeryMeri Creative Media Inc., 13 civ 8943 (December 17, 2013),  contends that VeryMeri cannot claim intellectual property rights in its stylized heart logo, which consists of or incorporates the <3 emoticon, since that logo/emoticon is “widely used in connection with apparel and related products,” since the stylized heart logo “is nothing more than a commonly used and well-known ‘emoticon’ or metacommunicative pictorial representation of a heart design,” and because “no one entity can be said to have the exclusive right over all forms of this [emoticon heart] design.” Continue Reading

Sarah Palin and North Jersey Media Group Battle Over “Fair Use” of Famous 9/11 Photo

Posted in Copyright, Fair Use

Written by: Susan Neuberger Weller

The iconic “Raising the Flag at Ground Zero” photo of firemen raising an American flag on September 11, 2001, which appeared on the cover of The Record newspaper and other newspapers on September 12, is at the heart of a lawsuit filed in Federal District Court in New York. The Complaint, filed by the owner of the copyright in the photograph, claims copyright infringement and false designation of origin for the unauthorized reproduction of portions of the photograph on the website for Sarah Palin’s federally registered political action committee, www.sarahpac.com,  and on her Facebook page, www.facebook.com/sarahpalin. Continue Reading

Willful Infringement of Copyright in Haitian Earthquake Photographs Cost AFP and Getty $1.2 Million

Posted in Copyright, Copyright Infringement, Damages, Digital Millenium Copyright Act, Safe Harbor, Statutory Damages

Written by: Susan Neuberger Weller

A federal jury in New York has found Agence France-Presse and Getty Images Inc. willful in their infringement of Daniel Morel’s copyrights in eight photographs of the 2010 Haiti earthquake, and ordered them to pay damages of $1.2 million. The court had already found AFP  liable for direct copyright infringement on summary judgment, but sent to the jury for disposition the issue of whether Getty’s affirmative defenses vitiated any liability for infringement. The jury was also asked to decide whether any infringement by either Defendant was willful. In addition, the jury awarded Morel $20,000 after finding that the two Defendants also violated the Digital Millennium Copyright Act.

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How Much “Intent” is Enough to Support an “Intent to Use” Trademark Application?

Posted in 15 U.S.C. 1051(b), Intent-To-Use Applications, Trademark Prosecution, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller

For many years now, the US Trademark Office has accepted trademark applications based upon a “bona fide intent to use” the applied-for mark on all the goods and/or to provide all of the services listed in the application at the time of filing.  Unlike in many other countries, a US application based on “intent to use” will not mature to registration until proof of use of the mark on all the goods and to provide all the services in the application has been filed with and accepted by the Trademark Office. The legislative history behind these statutory requirements makes clear that Congress wanted to prevent the warehousing of marks that no one had any real plans to use.

When an application is filed, the applicant must have an authorized representative sign, under penalty of criminal perjury, a declaration attesting to the fact that it has a “bona fide” intent to use the mark. The Trademark Office does not require proof of this intent at any point during the prosecution of the application. However, an application can be opposed by a third party with standing to do so on grounds that there was no “bona fide” intent to use the mark at the time the application was filed, rendering the application void. This is precisely what PRL USA Holdings, owner of the RALPH LAUREN POLO marks, did successfully in opposing two applications owned by Rich C. Young to register marks which PRL believed were confusingly similar to marks the company owned.

In these non-precedential opinions, the Trademark Trial and Appeal Board made clear that the “bona fide intent” required under the Trademark Act “must reflect an intention that is firm, though it may be contingent on the outcome of an event (that is, market research or product testing).”  Citing to prior case law, Section 45 of the Trademark Act, and the Senate Judiciary Committee Report for the relevant statutory provisions, the Board stated that there must be an intention to use the mark “in the ordinary course of trade” and not “merely to reserve a right in the mark.” Such an objective determination to be is made based upon all of the circumstances of each individual case.

The Board stated that one way of proving a lack of a bona fide intent is to demonstrate that an applicant has no documentary evidence, such as business plans, marketing or promotional activities, or evidence of discussions with manufacturers or licensees, to substantiate its allegations of intent.  Applicant Young’s responded to PRL’s discovery requests for evidence of activities involving the mark, that he was “in an intention to use status,” “did not have any business planning yet,” and  “did not have business activities yet.” In noting that it had “repeatedly found a lack of bona fide intent to use a mark by individuals who lack the demonstrated capacity to produce the goods identified in the application,” the Board held that the evidence in the cases demonstrated that Applicant only intended to “reserve a right in the mark” in case it was later approved for registration by the Trademark Office and that Applicant Young would only “at some unspecified future time begin developing a business.” Thus, PRL’s oppositions were sustained and both applications were refused registration.

So what is the take away here? First, coming up with a clever mark for a product or service that does not yet exist in any form other than in the imagination of an individual is not a proper candidate for an intent to use application. Thus, all applicants and their attorneys should ensure that there has been some demonstrated business efforts involving a mark before filing an application. For those applicants who might intend to use the mark only through a licensee, there should be some evidence to support this claim. Although the lack of intent will only surface if an application is challenged by a third party, the opposer need not have grounds to allege a lack of bona fide intent at the time the opposition is filed if it can, as PRL did, amend its application after discovery has uncovered no evidence to support claimed intent. Moreover, applications filed under Section 44 based upon a foreign registration are not immune from these requirements since all such applicants must also allege and declare under penalty of criminal perjury a bona fide intent to use the applied-for mark in US commerce despite the fact that proof of use need not be filed in order for the registration to issue.

Accordingly, although dreams can come true, be sure that clever ideas for a mark are backed up by evidence of plans to use the mark before filing an application.

TTAB Refuses to Register “The Slants,” Finding it to be “Disparaging”

Posted in Section 2(a), Trademark, Trademark Prosecution, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller

Racial and ethnic disparagement is a hot topic at the Trademark Trial and Appeal Board these days. While a decision is still pending in the latest cancellation action involving the long disputed WASHINGTON REDSKINS professional football team marks, the Board in In re Simon Shiao Tam, recently affirmed a federal trademark examiner’s refusal to register THE SLANTS as a mark for an Oregon rock band composed of Asian Americans on grounds that it was a derogatory slang phrase for people of Asian descent.

Section 2(a) of the Trademark Act prohibits registration of any mark which “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”  In order to determine whether a mark is “disparaging” under this Section, the Board applies a two-part test, analyzing: (1) the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and (2) if that meaning is found to refer to identifiable persons, institutions, police or national symbols, whether that meaning may be disparaging to a substantial composite of the reference group.

In this case, the Board considered evidence consisting of definitions of the word “slant” from various dictionaries and other reference sources, printouts from the band’s own webpage as well as its Wikipedia entry, and online articles reporting on the opinions of various Asian groups and individuals that the term “slant” was a disparaging term referring to Asian people. The band’s own Wikipedia entry stated that the name derived from “an ethnic slur for Asians,” and a band member was quoted as stating “We want to take on these stereotypes that people have about us, like the slanted eyes, and own them.”

In considering the likely meaning of the term, the Board noted that “the nature of the identified services” for which the mark was used were live performances by a musical band. Thus, the Board found that the term “necessarily identifies people, i. e., the live performers,” and those who attended the live performances would necessarily understand THE SLANTS  to refer to the persons who comprised the band. Moreover, it found that the evidence in the case showed that the slang meaning of the word “slants” was actually being touted by the band itself in connection with the services it was offering in the marketplace. Accordingly, the “likely meaning” of the term as used in connection with the services was as a derogatory reference to people of Asian descent. The fact that the band might have good intentions in trying to “own” the term did not, in the Board’s opinion, speak for the entire community of persons of Asian descent since the evidence also demonstrated that a substantial composite of that group found the term objectionable.

It is important to note that the Board only has the authority to prevent federal registration of a trademark. It has no authority, as it made clear in its opinion in this case, to enjoin any use of a mark. Thus, although it could not “call upon the resources of the federal government” in order to obtain the benefits of a federal registration for its mark, the band’s  First Amendment rights were not abridged by this refusal since it could continue to use the mark and claim ownership of unregistered, common-law rights in it. This is also true for the WASHINGTON REDSKINS marks, which have been under fire for many years. Even if the Board cancels these registrations, the marks, which have been in use for a very long time, will continue to benefit from substantial common-law trademark rights developed over decades of use.

 

 

 

Court Narrows Claims Surrounding “HAPPY BIRTHDAY TO YOU” Copyright Suit

Posted in Copyright, Copyright Infringement, Music

Written by: Joseph M. DiCioccio

Following up on a previous post regarding the lawsuit winding its way through federal court seeking clarity on whether the music publisher Warner Chappell owns or has the exclusive right to license the copyright in the ubiquitous “Happy Birthday to You” song, U.S. District Judge George H. King (Central District of California) has ordered that certain tangential claims be stayed until further notice, while the case will move forward on the central claim, essentially whether Warner’s copyright in the song is valid and enforceable or not.

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Oops! Assignment of Intent-to-Use Trademark Applications: Easy But Not Simple

Posted in 15 U.S.C. 1051(b), Assignment, Intent-To-Use Applications, Trademark, Trademark Prosecution, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller

 The language in the Trademark Act is very clear on the issue of assignment of intent-to-use applications.  In a recently issued precedential opinion, the Trademark Trial and Appeal Board has held, once again, that Section 10(a)(1) of the Act really means what it simply states, namely, that prior to filing proof of use at the Trademark Office, an intent-to-use application cannot be assigned “except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing an existing.” So why are registrations still being canceled for violating these terms?

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Google, Yahoo, and Ad Networks Agrees to Set of Best Practices to Combat Online Piracy

Posted in Copyright, Copyright Infringement, Counterfeits, Digital Millenium Copyright Act, Safe Harbor, Trademark Infringement

Written by: Joseph M. DiCioccio

The United States Intellectual Property Enforcement Coordinator Victoria Espinel recently blogged about a new effort to combat online piracy of intellectual property.  The broad-based effort attempts to leverage the participation of several large internet/publishing companies (Google, Yahoo, Microsoft, AOL and Condé Nast), advertising networks (24/7 Media, Adtegrity) and the Interactive Advertising Bureau.  The parties have agreed to voluntarily adopt a set of best practices to remove advertising from websites that are primarily engaged in copyright piracy (movies, video games, music, books, etc.) or selling counterfeit goods.

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The Latest Keyword Advertising Battle: The 10th Circuit Finds No Infringement Based on Use of Another’s Trademark to Generate Sponsored Advertisements

Posted in Google Adwords, Keyword advertising, Trademark Infringement

Written by: Jamison Arterton

Over the past few years, numerous trademark infringement suits have been filed over keyword advertising.  Last month, the 10th Circuit weighed in on this subject, issuing a decision with broad implications.  In 1-800 Contacts, Inc. v. Lens.com, Inc. , the 10th Circuit held that the use of another’s trademark to generate sponsored advertisements does not constitute trademark infringement.

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